Marc's practice focuses on intellectual property licensing and franchising in the retail/consumer goods and services areas, fashion/apparel and accessories, and commercial/industrial design, including the drafting, negotiation and enforcement of license and franchise documents and agreements, as well as implementation of branding and commercialization objectives for clients via licensing and franchising. In conjunction with the services above, he counsels clients on creating effective strategies for procuring, protecting and enforcing their global intellectual property assets. Marc also provides intellectual property litigation services involving patents, trademarks and copyrights, including related e-commerce, domain name, trade secret and unfair competition. He has also participated in and used alternative dispute resolution forums such as arbitration and mediation to enforce intellectual property rights. Marc frequently lectures and writes on intellectual property issues for a variety of intellectual property organizations and publications, including International Trademark Association (INTA), New York State Bar Association (NYSBA) Intellectual Property Section, American Bar Association Forum on Franchising, Wharton Business Law Association at the University of Pennsylvania, New York University, Association of the Bar of the City of New York Fashion Law Committee, Licensing Industry Merchandisers’ Association (LIMA), National Law Journal, IP Strategist and The New York Law Journal, Practical Law, The Licensing Journal.

Marc is listed in the 2017 and the six years immediately preceding editions of World Trademark Review 1000 – The World's Leading Trademark Professionals. He was recognized as a New York “Super Lawyer” in Intellectual Property by Super Lawyers magazine in 2017 and the seven years immediately preceding, and, for the last six years, he was named a Top 100 New York Metro "Super Lawyer" in Intellectual Property. He has been recognized as an "IP Star" in 2017 and the four years immediately preceding by Managing Intellectual Property magazine. Marc was also recommended by Legal 500 US in 2015 and 2016 for Copyright. In 2013, he received the Lexology Client Choice Guide - International 2013 Award and is the sole winner in the Intellectual Property: Copyright category for New York. He was also listed in the 2012 and the four years immediately preceding editions of Chambers USA: America’s Leading Lawyers for Business for Intellectual Property: Trademark & Copyright. Chambers noted that Marc has "tremendous business savvy and is tenacious in his work ethic," according to his clients (2012).

The International Trademark Association (INTA) honored Marc with the Volunteer Service Award (VSA) in the Advancement of Committee or Subcommittee Objectives category. The VSAs recognized Marc in 2015 for providing exemplary volunteer service to INTA. As a member of INTA’s Alternative Dispute Resolution Committee’s Neutral Standards & Measurement Subcommittee, Marc made a tremendous impact by volunteering both his time and expertise to support the Association’s goals and objectives. Marc is a recipient of the 2015 Commitment to Justice Award presented by Her Justice recognizing his pro bono work in representing a client who sought help in terminating her arranged marriage. Through skillful negotiation, without any court intervention, Marc secured for the client a divorce on terms very favorable to her and to her children. He is a recipient of the Kilpatrick Townsend 2014 Pro Bono Justice Award. Marc is also a recipient of the 2015 Cardozo Law School Alumni of the Year Award recognizing Marc's leadership and dedication to Cardozo Alums and students.

Since 2004, Marc provided high-level brand licensing counsel to JOSEPH ABBOUD, and played a key role in:

  • Drafting and negotiating brand license agreements that generated $88 million in royalties from 2005-2013, increased annual licensing revenue from $1 million to over $15 million, and secured additional licensing revenue from 2013 onward of $55 million. 
  • Providing advice and counsel in the creation of a strong retail brand focus resulting in the growth of annual retail sales from $20 million to over $400 million. 
  • Implementing a newly structured licensing program to generate $77 million in guaranteed licensing revenue with industry leading partners in the apparel area, including deals with PVH, Peerless, Onward Kashiyama, VF and direct-to-retail licenses such as JCPenney and Men’s Wearhouse. 
  • Expanding the Joseph Abboud brand internationally from 3 countries to over 50 countries.

Other Representative Clients: MOMOFUKU, FIG & OLIVE, S’WELL BOTTLE, JOE FRESH, PATTY MADDEN, BILLY REID, ENERGIZER, Georgia-Pacific, Osram Sylvania and UPS.

Professional & Community Activities

Benjamin N. Cardozo School of Law, Alumni Association Pro Bono Committee, Chair (2010-present); Alumni Association, Former Chairperson (2006-2010); Career Development Committee, Former Chair

International Trademark Association (INTA), ADR Committee (2013-present); Neutrals Standards and Measurements Sub-Committee, Chair (2014); Amicus Committee, Member (2012-2013); Law Firm Committee, Chair (2010-2011); Programs Committee, Member (2005-2010); Programs and Standards Subcommittee, Chair (2007-2010); E-Learning Committee, Member (2004); INTA Annual Meeting Project Team, Member (2003 and 2005)

New York State Bar Association, Intellectual Property Law Section, Honorary Member and Former Section Chair (2002-2004); Litigation Committee, Co-Chair (2006-present); Trademark Law Committee, Former Co-Chairperson (1998-2002); Business Law Section, Franchise, Distribution and Licensing Law Committee, Member (2014-present)

American Bar Association, Intellectual Property Section, ABA Forum on Franchising, Member

Association of the Bar of the City of New York, Fashion Law Committee, Member (2012-present), Chair (2014-2017); Intellectual Property Council Representative (2013) 

Hebrew Academy of Nassau County (HANC), Board of Directors (2010-2012)

Young Israel of Plainview, Board of Trustees (2010-present); Former Vice President of Fundraising (2007-2008); Little League Director (2004-present)

Education

  • Benjamin N. Cardozo School of Law, J.D. (1992)
  • State University of New York, University at Albany, B.A., History, Minor in Business (1989)
    cum laude

Bar Admissions

  • Connecticut (1992)
  • New York (1993)
  • Colorado (2005)

Admissions

  • U.S. Court of Appeals for the Federal Circuit (1995)
  • U.S. Court of Appeals for the Second Circuit (2000)
  • U.S. District Court for the Eastern District of New York (1992)
  • U.S. District Court for the Southern District of New York (1992)
  • U.S. Supreme Court (2005)

Who We Are

What fully engaged means to me:

Being fully engaged means not only being available when the client calls, but also knowing your client's business, understanding the client's short and long term objectives, and then providing cost effective legal and practical advice to best serve your client's interests.

The Grace Building, 1114 Avenue of the Americas
New York, NY, 10036-7703
USA
t +1 212.775.8781
f +1 212.937.3842

Marc A. Lieberstein

Experience Highlights

Global trademark licensing and portfolio management and enforcement for JA Apparel Corp. (dba Joseph Abboud)
The firm serves as global trademark and licensing counsel to JA Apparel Corp., a $400 million worldwide lifestyle apparel, home furnishings and more
Arbitration of international trademark licensing dispute before the American Arbitration Association on behalf of JA Apparel Corp. (dba Joseph Abboud)
Served as co-lead counsel in an international arbitration proceeding for plaintiff licensor JA Apparel Corp. against a Chinese licensee. After more
License negotiations and intellectual property counseling for Patty Madden Inc.
Represents Patty Madden Inc., a well-known wall covering designer, in drafting and conducting license negotiations in connection with branding of the more
Intellectual property litigation for JA Apparel Corp
After filing demand for arbitration, and conducting mediation, obtained favorable settlement for JA Apparel Corp., a leading men’s more